Two regimes coexisting at the community level and harmonized
national law; both regimes are interlinked in terms of prior rights in one
creating barriers to rights in another.
Obtained by registration alone, but may be lost with nonuse for five
subsequent years. Geniune use in one
member state is enough to maintain a community TM.

Cluttering of register/genuine use of CTMs as problems of
convergence? How to manage the
relationship between the two tiers.

Other problems: Aesthetic functionality: courts shouldn’t
just look at distinctiveness, but also at competitive aspects of design.

Coexistence: there is a growing feeling that national
offices, especially in smaller countries, are at risk—applications are
declining drastically; an existential threat.
Fees for CTM are relatively low (not 27x national fees); “genuine use”
is too easy to establish. Result:
clutter, impediments for the accessibility of new marks. (I wonder if the EU needs a Dawn Donut rule for the new millennium.)

Her study finds: cluttering is a relative not an absolute
problem. There are not “too many marks”
but “deadwood” may be accumulating. Marks
may look like huge ocean liners but have the scope of little boats. In general, agents/attorneys are more
concerned about cluttering than mark proprietors. The density of registrations and problems
therefrom appear to vary between industry sectors and types of marks. No hard evidence that new marks were
substantially hampered by clutter. Note,
though that EU system is less transparent than US system.

Proposed solutions: demand declaration of use or intended
use. Stakeholders considered this
unacceptable. Heavy burden on
rightsholders and authorities if taken seriously. If not monitored thoroughly, it would be
without effect.

Benelux rejected EU’s statement that use anywhere is use
everywhere, now that we have 27 members.
Political clash raging now. Political
boundaries can’t be decisive for genuine use.
Should you have to use in 2 countries?
Must accept unitary use, but should distinguish between national and
community TMs. Approximate American
system: if a mark is maintained as a CTM but is just used in one corner of the
market, bona fide user should be able to make a remote use in the EU, drawing inspiration
from Dawn Donut (great minds think
alike, and so do ours?). Met with much
resistance/criticism.

Too much money at stake to change now; EU’s basic philosophy
is that oversized/unused registrations should be left for the parties to sort
out. But will that work?

Stacey Dogan, Professor, Boston University School of Law

Looking back: Legitimate goals of TM law—critics say courts
have been diverging from those goals in various ways that harm speech and
competition. TM law run amuck, in need
of discipline. Legal developments are a
bit more complicated: SCt has taken 5 substantive cases in the last decade, and
the TM holder has lost every one. But
what about the lower courts? It’s significant that the highest court has been
sending signals to constrain TM in important ways. After a fairly extraordinary
and steady expansion in the 80s and 90s, the Court retrenched in important ways
and started to draw some lines in the sand. Lower courts too, while we’ve seen
some foolish decisions, have responded to some of these warnings. Cases involving intermediary liability, for
example.

To be sure, TDRA did expand TM protection, doing what it
probably intended to do last time, but even that codified some important limits
on the rights of famous TM holders.

That doesn’t mean that the critics are wrong—TM owners’
claims and C&D letters; outlier decisions that are just wacky; rogue
prosecutors: criminal case in Mass. against someone selling T-shirts with the
logo of the team the Bruins were playing against in the Stanley Cup with a big
red line across it, and the claim is that this was criminal counterfeiting. Still, we need to ID our successes in
restraining or disciplining the growth of TM rights. IIC looked like it would
kill comparative advertising on the internet, but in practice it’s been applied
more sparingly, and more courts seem to be rejecting it. Product design protection looked like it was
going to threaten competition in all sorts of ways in 2000, but courts have really
put limits on it since then.

What strategic lessons can be learned from these successes?

Courts and legislatures are instinctively troubled by what
they perceive as unjustified free riding on TM owners’ goodwill:
cybersquatting, merchandising, IIC, post-sale confusion, and even some cases
involving dilution and critical commentary only make sense as responses to free
riding. Yet that doesn’t dictate the outcome in all cases. Courts favor defendant when they appreciate a
precise and tangible social value promoted by the unauthorized use of the
mark. Comparative advertising: courts
feel that promotes competition and is therefore good (RT: though note in Europe
they often don’t!). Courts also feel that it’s important to protect the
boundaries of other regimes, specifically copyright and patent—Dastar and Traffix. Parodies: courts often
think it’s speech.

Courts don’t seem to see the value of merchandising, and
some other uses like some parodies. We
need to accept the burden of persuasion that’s been thrust on us to limit
rights and point to the social value of the use. We need a broad
interdisciplinary conversation about the roles of brands in our society and how
different uses of brands promote or discourage certain social goals. If the last century has been the century of
the brand: vessels of social status.
Draw in social scientists to engage with the implications of this
development and with the impact that unauthorized uses might have on us as
citizens, consumers, speakers. We ought
to address these particular uses of marks that promote identifiable social
values: expressive works, show affiliation with TM owner.

Q for Kur/Dogan:

Dogan: particularly interested in European perspective on
use. Was the concern about use, or about
tying use to particular products and services, which can prove to be a morass?

Kur: both. Goes back to conceptual difference between the
two systems. TM in Europe is considered “IP
rights,” just like patents/industrial designs.
Acquired by registration, full stop.
Changing that by bringing the concept of use into the
acquisition/maintenance stage, with a public interest in whether the mark is in
use, is pretty alien. American system
would be more than just adopting use to increase transparency; would move to
regarding TM as a market mechanism rather than as an “IP right.” Though we are getting closer in fact.

Dogan: there is an impulse that anyone who has value they
can plausibly claim for themselves has an individual right to that value (as
against the community that has actually contributed to producing that value)—see
it also in debates over taxes/Tea Party—a lot of hard work by a lot of different
people contributes to success, but we have adulation/fetishism of the
individualistic notion of success, translating into the commercial context with
TM law. Why should someone be able to
sell a Red Sox T-shirts? Those players
work hard.

Kur: this is a gut feeling, shared by many. Then one could
ask: should that be law? If we want a
sensible economic rationale, the answer may be no; but that’s not the only
possible justification.

Madison: the brand itself is assigned a kind of independent,
abstract agency. The human agency is concealed; doctrine pushes us not to look
at who is doing what behind the curtain. Things have to be justified relative
to the brand/mark, and not with respect to the people. Why aren’t we bothered by the fact that there
are 18 coffee shops within a block of each other, even though some are free
riding on the work of the others in finding a good location? Should focus on the disappearance of agency.

Stowel: ECJ emphasizes the function of the TM; doesn’t that go in the other direction, at
least potentially, if it’s not interpreted formalistically? Does the idea of the function of the TM play
some role in US law?

Kur: Function does work in some important cases, e.g.
Google. But have also misused it in L’Oreal case. That’s why we need more clarity/transparency,
to create clear rules about what the functions of TMs are.

Dogan: American law has traditionally had a normative vision
of what TM is supposed to be for, and scholarly commentary has tried to
encourage courts to get back to that vision, and SCt has tried to be somewhat
true to that. Fair competition; limited
when it impedes rather than promotes competition. And that comes close to the idea of function:
function is not threatened when used in an expressive way. But it is a manipulable notion.

Rebecca Tushnet, Professor, Georgetown University Law Center

Design right: undertheorized in US law. Design patent rights are visual only, which
may help explain that, because courts and lawyers are really uncomfortable with
visuals. Not a substitute for copyright because
despite the language of substantial similarity a different, tighter standard
seems to apply: having a design patent on a Superman lunchbox wouldn’t protect
against a lunchbox using a different image of Superman, whereas a character copyright
would so protect (assuming there are no public domain issues).

Can you make infringement judgments just by looking at
pictures, though? Design patent argues
that you can by triangulating versus prior art.
Look at whether the accused design is similar to the patented design
only because of features that also appear in the prior art.

Uniqueness is the key to design patent. Key distinction from copyright, which refuses
to protect ideas, even if unique. Even
if you invent a new genre, you only control your expression in that genre
(e.g., resurrected dinosaur amusement parks).
Thus I disagree with Samson Vermont who wants uniqueness to be a measure
of copyright rights—a convergence of TM dilution-like ideas with copyright
rights, which I think is a mistake. If you want such rights over your unique
expression, get a design patent, but its scope will be limited in other ways.

But looking at pictures alone can’t fix everything: how do
you triangulate when the accused design is similar but not identical to the
patented design and also similar but not identical to the prior art? What is the scope of the design patent then?

Mark P. McKenna, Professor, University of Notre Dame Law School

John Carter of Mars: early books in the public domain. Complaint by Disney against comic company
making John Carter comic books: Disney claims copyright infringement of later
books and also TM infringement/false designation of origin, alleging that John
Carter has secondary meaning and that using him in a work sends a false message
about origin. Similar claims of both copyright & TM infringement with a
self-published novel about Marion Zimmer Bradley’s Darkover. Plaintiff is claiming rights originating out
of their own expressive work and trying to enforce them using the Lanham Act.

University of Alabama sued an artist who paints pictures of
Alabama games, claiming that use in picture infringes trade dress rights in
uniforms.

Kai Aspire makes street
art, including parody of Marlboro trade dress. Got C&D saying the content designates the
source of the work and therefore infringes.

Dastar applies:
cases where the plaintiff asserts claim for TM rights arising from their
creative work. Second class: rights
arise more conventionally, but D uses TM in creative work and that allegedly
indicates the source of the work. Dastar doesn’t necessarily do a good job
of dealing with either one of them.

Dastar says “origin”
means physical origin of goods/services.
In the Alabama case, the plaintiff argued that people would be confused simply
by seeing the Alabama marks and recognizing the content. He thinks that’s ruled out by Dastar, but it’s too easy to plead
around: people will see the marks and be confused by the presence of the marks
about the source of the physical goods.
That argument isn’t available to the plaintiff in Dastar because the content doesn’t have secondary meaning.

But if it’s that easy to avoid Dastar, then Dastar is
practically meaningless. Note that John
Carter involves use of public domain material. If Disney can say people will be confused
about source because of the content of the physical books, then we get a major
conflict with copyright law. Imagine
that Steamboat Willy were to enter the public domain. What stops Disney from claiming that, because
Mickey Mouse is in the video, people will think it’s the source? No relevant sense in which Steamboat Willy
would be in the public domain. This is
kind of what went on in the Betty Boop case.

Dastar should rule
out these claims. We could talk about this
in two different ways. (1) We could say
any claim is barred if it’s based on the defendant’s use of content of the
plaintiff’s that originated in a copyrighted setting. (A kind of functionality defense, building on
the old Nabisco case.) (2) We
could focus on defendant’s use: when a defendant is using the mark in its own
content, that can’t found a TM claim: mere content can’t be an implicit
indicator of source (Rogers v. Grimaldi
type). Either would be sufficient to bar the claim in these cases.

Dastar doesn’t
itself help with the Alabama case unless we use description (2). Think about the defendant’s expressive use.
Confusion can never be actionable when it arises from implicit source
suggestion created by content. If you do
it the other way, and focus on barring anything that originates in copyright,
the scope could be broader than we want/courts would accept—ads, labels, etc.
are copyrighted. (2) is less clearly
motivated by copyright channeling, but it does take care of the problems. Also, a lot of these uses are potentially
insulated by a bunch of other TM doctrines—Rogers
v. Grimaldi/First Amendment/nominative fair use/maybe even descriptive fair
use. But real payoff to thinking about
this under Dastar: it’s a tool that gets
cases dismissed on motions to dismiss.
None of the other doctrines work like that—they entail
balancing/appeals. (Is that true of Rogers?)
The plaintiff is trying to control the creative content of the defendant’s
work through TM law. Leaves room for
explicit claims of licensing/false advertising.

Miller: suppose I express something by putting a logo on a
shirt in a different color? Does that
get the benefit of the limit?

McKenna: my rule does put pressure on what’s expressive, and
that’s important, but that pressure already exists. Court in Alabama case thought that putting a
painting on a mug was different than creating a poster from the painting. Appeals court was clearly sympathetic to that
view. Could say that confusion can’t
arise from an input, but he thinks that might be too broad. Still, there are
easy cases that could start at the core.

Miller: also look at Saderup/Jonah Hex cases, where
California SCt has also created an expression line and seems to deal with the
same issues.

Madison: Insoluble problem because so many of the cases come
out of visual arts settings. They’re problematic because courts aren’t good
with visuals. Visuals have a kind of psychology/authority distinct from text. So long as you have consumer
expectations/reaction built in to TM, the test will always be suboptimal; there
is a plausible argument that consumers look at the picture and think it comes
from Alabama. Dastar puts pressure on the idea of having a product trade dress
right in these kinds of images to begin with.

McKenna: the right is in the uniforms, then trying to enforce
that against the paintings. It’s a strange use of secondary meaning, which
seems to mean “recognize the content” not “recognize the source.” Trying to draw a line independent of consumer
expectation, if what consumers think is driven by implicit suggestion in the
painting. Would apply to word marks in titles and songs too.

Kur: European perspective—would have to use the functions of
the TM. Any detriment to the origin
function? Danger is that once you can
make plausible case of consumer assumption on basis of content that there’s a
license, you’d be forced to find infringement.

McKenna: would translate impairs function to “causes
confusion.” Our courts think that confusion harms the TM’s source function,
even though that’s not always true, and that leads to a feedback loop of
ever-spiralling confusion. We need some clear lines. You can also teach consumers here: they
shouldn’t rely on the presence of a mark in content to convey source. There’s no real harm to them.

Afori: Substantial similarity is a metaphor used to
introduce things like defendant’s state of mind—no objective standard.

Me: I agree entirely—substantial similarity is a mess.

Janis: all important design patent cases are going to
involve cases in which the accused design varies somewhat from the patented
design. There is a tradition of a
penumbra around the design. And a
penumbra around prior art. Substantial
similarity comes out of a really old case during a period in which the SCt was
using “substantial similarity” even in utility patent cases—did not have the
vocabulary we have now about element by element infringement. Note, however, even if you had strict
infringement, there’d still be room to claim infringement by the doctrine of
equivalents.

My apologies, but I have a DMCA comment due and will do a bad job on the next panel.

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